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Samsung v Apple: How does the judge become an ‘informed user’?

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps142, first published online: 17 September 2012

Judge Birss QC has decided, despite initially being struck by their similarity, that three Samsung Galaxy Tab tablet computer designs did not infringe Apple's Community Registered Design No 000181607-0001.

Legal context

According to Article 10 of the Community Design Regulation (Council Regulation 6/2002):

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
Moreover, Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, states:
The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

How then should the judge don the spectacles of the informed user (Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936) and judge whether a different overall impression is produced?

Facts

Apple iPad

In response to Apple's allegations of infringement, Samsung brought proceedings in the United Kingdom for a declaration that three Samsung tablet computers, namely the Tab 10.1, Tab 8.9 and Tab 7.7, did not infringe Apple's tablet computer design. Apple counterclaimed for infringement, alleging that seven features were reproduced, namely:

A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge.

A thin profile, the impression of which is emphasized by (5) above.

Overall, a design of extreme simplicity without features which specify orientation.

Samsung Galaxy

Expert evidence was adduced about whether any features of the design were solely dictated by technical function and therefore excluded from design protection altogether under Article 8(1) of the Regulation, and also the degree of freedom of the designer under Article 10 of the Regulation. Further, over 50 designs were put forward by Samsung as evidence of the existing design corpus. The judge considered each of the seven features in relation to the prior designs, and in relation to the expert evidence on design freedom.

The judge found that the first four features were present in the Samsung products, but gave them lesser significance because they were present in the design corpus.

The fifth feature was considered to be present only as a feature of a class of products that would be familiar to the informed user.

The last two features were considered to represent points of difference between the Samsung products and the RCD. The Samsung products were thinner, and they had ornamentation on the back that was absent from the RCD.

The judge concluded:

Are these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is—to what degree?

And:

The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.

He therefore concluded that they did not infringe.

Analysis

The judge noted that ‘Community design infringement cases are supposed to be simple. The material presented in this case is complex and detailed.’ Therefore, although ‘the end result is a judgment much longer than should be necessary’, he specifically stated: ‘Given the commercial importance of this dispute I do not criticise the parties for putting it forward in this way.’ In assessing the scope of protection, the judge followed the approach advocated by Apple, and not resisted by Samsung, reading the requirements of Recital 14 into the test set out in Article 10 of the Regulation, and proceeded in the following manner:

Although the outcome depends on overall impression, as a practical matter the design must be broken down into features. Each feature needs to be considered in order to give it appropriate significance or weight. Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.

Since this case is concerned with infringement only and not validity, the list of features is a list of similarities said to exist between the design and the alleged infringement. Aside from considering similarities, the differences between the design and the alleged infringement also need to be addressed and weighted. For all the similarities and differences, the weighting exercise is concerned with assessing the significance of the similarity to the informed user. Things which look the same because all the products in the class look that way do not excite the informed user's interest to the same extent as unusual features.

Taking into account the similarities and differences, appropriately weighted, the court can decide whether the alleged infringement produces a different overall impression on the informed user from that produced by the registered design.
Each of the seven features was therefore analysed in this way, leading to the final result.

The judge additionally commented in the antepenultimate paragraph of the judgment:
This case illustrates the importance of properly taking into account the informed user's knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art.

This indicates that the expert evidence, and the mass of prior designs, is not an optional add-on that the parties can indulge in if they wish to devote extra resources to a commercially important case, but an essential step in educating the judge into an informed user. This is the more remarkable given that validity was not at issue in the proceedings, but only infringement.

And the most important thing about each of these is what they look like.

And:

It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours.

These remarks recommend that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom. It remains to be seen as to how these approaches are to be reconciled in subsequent cases.

Practical significance

This judgment suggests that, in order to judge the scope of a Community design right, it will be necessary as a matter of course, and not only as an exceptional matter, to provide evidence of the design corpus and expert evidence on the degree of freedom of the designer in order that the judge can become an informed user.

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